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Author Topic: Trademark, series, titles, and...yeah...lawsuits (Cockygate & ordinary-word TMs)  (Read 72455 times)  

Offline EB

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It appears that an author has trademarked the mark "cocky" for "A series of books in the field of romance" and "A series of downloadable e-books in the field of romance."

Multiple authors are reporting that they have had their books reported to Audible & Amazon over having the word "cocky" in a book title. (Search social media for cocky + trademark). Other authors state they have received emails from the owner of the TM threatening legal action if they do not change the title of their book. Some authors have complied and changed the title of their book; some are not complying and are considering other recourse. The authors being targeted seem to be indie authors, both those who used the word "cocky" in their title before the TM was registered and after.

What are your thoughts on this and what do you think the implications of this will be for the author community?



Edited to added "MERGED" to thread title. - Becca

Re-edited to add the "cockygate" to thread title, for ease of searching. - Becca
« Last Edit: May 25, 2018, 05:38:23 PM by Becca Mills »

Online Bill Hiatt

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It appears that an author has trademarked the mark "cocky" for "A series of books in the field of romance" and "A series of downloadable e-books in the field of romance."

Multiple authors are reporting that they have had their books reported to Audible & Amazon over having the word "cocky" in a book title. (Search social media for cocky + trademark). Other authors state they have received emails from the owner of the TM threatening legal action if they do not change the title of their book. Some authors have complied and changed the title of their book; some are not complying and are considering other recourse. The authors being targeted seem to be indie authors, both those who used the word "cocky" in their title before the TM was registered and after.

What are your thoughts on this and what do you think the implications of this will be for the author community?
This is weird. Can someone trademark something that other people have already used? From what you're saying, apparently. The whole thing sounds ridiculous.


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Online Rob Martin

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The same happened for the term "LitRPG", I think there's a few threads on it here.

Online Becca Mills

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Can trademarking really force people to change something retroactively?? That seems grossly unfair.

IANAL, so maybe there's something I'm not getting, but if "space marine" couldn't be successfully defended as a trademark, due to preexisting wide use, how can a word as common as "cocky" be?

Online Lydniz

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I think this person is going to end up spending a lot of money for nothing.

Offline RBN

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'Scuse me. Gotta go trademark "duke" really quick.

Offline Mercedes Vox

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'Scuse me. Gotta go trademark "duke" really quick.

And "billionaire."
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Offline C. Gockel

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I think this person is going to end up spending a lot of money for nothing.

I think someone is going to cause other people to spend a lot of money for nothing. I am so angry about this ... its grossly unfair and shows the at our legal system is deep in the suck that this is happening at all.


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Online Becca Mills

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Online PhoenixS

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A tricky one, for sure, since it's a single descriptive word like, say, Apple. I think having a Cocky series would be a direct violation, but a single book with the word in its title? Hmmm... I think it might take one's attorney talking to the TM holder's attorney on a case-by-case basis?

http://www.copylaw.com/new_articles/titles.html

Merely descriptive marks are not entitled to exclusive protection without establishing secondary meaning. By secondary meaning, I mean well-known marks that call to mind a particular publisher, producer or manufacturer. Many claims of exclusive ownership turn out to be bare assertions of rights over non distinctive marks phrases for which there is little likelihood of confusion. If you receive a cease and desist letter dont panic. Take a deep breath. Consult a trademark attorney who can assess the level of the threat. Sometimes a well-written letter, drafted by counsel (or with the help of counsel), explaining why you believe they have a weak claim and are attempting to unfairly silence you, will get them to stand down. For example, on investigation your attorney may advise you that they dont have a valid trademark. Or, perhaps, you are using the word or phrase in its classic or descriptive sense in your narrative, not on the cover to suggest endorsement or an association with the trademark user.

Offline EB

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I think someone is going to cause other people to spend a lot of money for nothing. I am so angry about this ... its grossly unfair and shows the at our legal system is deep in the suck that this is happening at all.

Me too ^^

What absolutely boggles my mind is that any author can be hit with a lawsuit and be forced to shell out tons of money to defend it. I'm sure that's why many authors have simply changed the book name after they were threatened rather than defend themselves.

I've been reading responses from lawyers on this issue, but even they are not in agreement. Some say the TM holder has no chance of winning a lawsuit, but that still doesn't stop her from making the threats or filing a lawsuit. Some say it's a huge TM issue that slipped through the cracks because no one objected in a timely manner, and that the TM holder CAN legally keep others from using the word.

IANAL, but it appears that the way the TM is worded that the word "cocky" only applies to "A series of books in the field of romance" and "A series of downloadable e-books in the field of romance." That would exclude a title, the way I read it.

Can trademarking really force people to change something retroactively?? That seems grossly unfair.


Yes, seriously! I am particularly interested to hear what legal folks think about that.

Offline guerin

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The fact that this is a common word means that they would most likely fail in their attempts to enforce this trademark based on the existence of prior art. The problem is, are you willing to pay the cost of litigation to win, and could you consider it winning after it cost you some major legal fees?

I believe it will take someone who has enough money to fight this, but from my reading of Trademark law as it applies to book titles, you are only forbidden from using the word Cocky in your series name. (Notice in the link the trademark symbol is only in the series name and not the actual book's title.)

Unfortunately, this appears to be a new trend in the publishing industry. It may very well be an opening shot against the indie movement. Any large publisher would fight this or pay the TM holder to help enforce their own abuse of the TM system.



Edited to remove link. Drop me a PM if you have any questions. - Becca
« Last Edit: May 04, 2018, 03:47:53 PM by Becca Mills »

Offline guerin

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This is weird. Can someone trademark something that other people have already used? From what you're saying, apparently. The whole thing sounds ridiculous.

Perhaps you have never heard of Apple?  How about Amazon? Yes, you can TM a common word but obviously, in these cases, Apple couldn't sue you for publishing a book with a title like "The Apple Did Not Fall Far from the Tree", nor could Amazon for having a book titled "The Reptiles of the Amazon"

Offline Bards and Sages (Julie)

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The Court of Public Opinion can be much stronger than a Court of Law. If enough impacted authors made public statements of what was happening, the author might well be embarrassed into backing down. It has been known to happen when enough bad publicity hits that a TM holder will back off an obviously poorly thought-out enforcement.

Trademarking the phrase and trade dress (font and color choices) is one thing, and that isn't a problem. Attacking ANY romance author with the word "cocky" in the title needs some public ridicule.

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Online Lydniz

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I think someone is going to cause other people to spend a lot of money for nothing. I am so angry about this ... its grossly unfair and shows the at our legal system is deep in the suck that this is happening at all.

Yes, probably what I meant was she is going to spend a lot of money and cause other people to spend a lot of money and her case won't be upheld (because stupid) and all she'll have achieved is to make lawyers richer and herself unpopular.

Offline MClayton

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Remember the "aha moment" fight between Oprah and Mutual of Omaha? https://www.techdirt.com/articles/20091110/0741356873.shtml

IANAL, either, but I have a feeling there must be some sort of loophole somewhere, and that this isn't how trademark law was originally intended to work. 

Offline Victoria.T76

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Perhaps you have never heard of Apple?  How about Amazon? Yes, you can TM a common word but obviously, in these cases, Apple couldn't sue you for publishing a book with a title like "The Apple Did Not Fall Far from the Tree", nor could Amazon for having a book titled "The Reptiles of the Amazon"

Exactly, Apple can get away with it as they have no relation to the fruit, the saw with Amazon. I would imagine enforcing Cocky in relation to a series of romance books when it is already widely used would be near impossible.

In the U.K. we can challenge trademarks with no cost to ourselves, are you able to do the same in the U.S?
« Last Edit: May 05, 2018, 01:50:12 AM by Victoria.T76 »

Online Rob Martin

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In the U.K. we can challenge trademarks with no cost to ourselves, are you able to do the same in the U.S?

Nope. Everything here costs.

Offline Word Fan

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IANAL, but it appears that the way the TM is worded that the word "cocky" only applies to "A series of books in the field of romance" and "A series of downloadable e-books in the field of romance." That would exclude a title, the way I read it.

Exactly. Despite the huffing-and-puffing threats that one might receive over the use of the single word in one's title (and to which one should respond by saying that that the sender is full of **** should refrain from making baseless claims or will be slapped with a responding injunction), it is the use of "cocky" in a competing series that is being protected against.

This I can actually understand. It's no different from the powers-that-be not allowing just any old doofus to write and market (and hence make money from) a "Star Wars" book.

When you put in all of that effort, you don't want leeches bleeding off income that is rightfully yours.

Use of the single word is fine, especially (as has been done in past cases) if you place a notice near the beginning of the book stating that your book is not part of or connected in any way with the "cocky" series (or something like that).


Edited.  PM me if you have any questions.  --Betsy/KB Mod
« Last Edit: May 04, 2018, 10:46:33 AM by Betsy the Quilter »

Offline kw3000

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Would a # placed before the offending word or an ! added after it be enough of a differentiation?

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Online Cassie Leigh

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There was a lot of discussion about this on the Author Support Network FB group last night. What I pulled from that discussion was that there was a comment period between when this was filed and when it was approved and that if someone had objected during that period it would've been easily thrown out. But no one was monitoring those filings so no one did. Now that the mark has been approved it becomes a much more serious issue and much harder to challenge. And anyone impacted by this needs to be very proactive about doing so.


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Offline Bards and Sages (Julie)

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Exactly. Despite the huffing-and-puffing threats that one might receive over the use of the single word in one's title (and to which one should respond by saying that that the sender is full of **** should refrain from making baseless claims or will be slapped with a responding injunction), it is the use of "cocky" in a competing series that is being protected against.

Except the TM holder in question is apparently threatening to sue anyone with the word "cocky" in the title. And as we have learned from a previous thread here in KB, defending yourself in civil court, even when you are 100% in the right, is not cheap and you have almost no chance of recovering your expenses.

Authors who lack the financial resources to defend against this sort of thing are forced to either: A. comply or B. Risk bankruptcy and defend. Because even if you win, the chance of collecting anything is somewhere between slim and none. This is how patent trolls are able to extort money from small businesses. You either pay the $1000 to "license" the patented concept, even when you are 100% in the right, or you spend potentially hundreds of thousands fighting it.

The nature of civil court in the U.S. favors the litigant that can afford to pay the legal fees. If you lack the resources to defend, you are pretty much screwed.

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Offline Evenstar

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I've just trademarked the term "Bad Boy" within a series title. Please change all your titles immediately, or pay me one million dollars per book to continue usage.

Offline Victoria.T76

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I found the series this relates to EDITED: removed link, as whilst I do not agree with what she is doing, I would hate to direct people to her.

It seems to me the copyright relates to the series title only, and the word cocky can be used on a book title.
« Last Edit: May 04, 2018, 11:17:37 AM by Victoria.T76 »

Online Lydniz

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I found the series this relates to EDITED: removed link, as whilst I do not agree with what she is doing, I would hate to direct people to her.


It seems to me the copyright relates to the series title only, and the word cocky can be used on a book title.

Ouch. It looks like she's getting backlash.



Edited to remove link from quote. Drop me a PM if you have any questions. - Becca
« Last Edit: May 04, 2018, 03:27:13 PM by Becca Mills »